Priority based on application in China has been accepted in Taiwan from November 22, 2010

    As announced by the Taiwan Intellectual Property Office (TIPO) on November 10, 2010, priorities based on patent, trademark and plant variety in China have been accepted in Taiwan from November 22, 2010.

    The “Cross-Strait Agreement on Intellectual Property Rights (IPR) Protection” was signed on June 29, 2010 and became effective on September 12, 2010. The said Agreement is intended for getting the mutual protection on patent, trademark, copyright, plant variety and related intellectual property rights between Taiwan and China. After effectiveness of the mentioned Agreement, the authorities at both ends have made great efforts to negotiate and communicate as to when and how to accept priority based on the other party. Finally, the TIPO announced that priorities based on China patent, trademark and plant variety applications have been accepted from November 22, 2010 as long as the earliest application in China was filed on or after September 12, 2010, the effective date of the “Cross-Strait Agreement on Intellectual Property Rights (IPR) Protection”.

(Source: TIPO Newsletter dated November 10, 2010)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4857)

    Article 21 of the Enforcement Rules of the Patent Act stipulates that “In the event of any shortage of page or omission in description or drawings, the correction date will be regarded as the filing date. However, if the correction thereof is been contained in an earlier application where a priority right was claimed, the original filing date of the application shall be retained.”

    In the past, the correction date will be taken as the filing date only when the specifications of an invention patent or utility model contain totally no patent description of the invention or utility model or totally no claims, or an invention patent application contains no essential drawings, a utility model application contains no drawing, or a design application contains totally no drawings. If an invention patent, utility model or design application lacks only part of the patent description, the claims or the essential drawings/drawings at the filing stage, the applicant is allowed to correct the shortage within the official deadline set by the examiner after filing in order to keep the original filing date.

    According to the amendment of the Substantive examination guidelines - Section I. Chapter 1 effective on September 7, 2010, the shortage of partial page or omission in the detailed description, claims or drawings in a patent will result in delaying the filing date until the correction date even if they are supplemented within the official deadline set by the examiner. However, if the correction thereof has been contained in an earlier application where a priority right was claimed, the original filing date of the application shall be retained.

    If the applicant requests to withdraw the supplement of all shortage at a later stage, the filing date will be returned to the original filing date.

    The other solution is to declare that the shortage or omission part will not influence the substantive technology of the patent at the stage of formality examination to keep the original filing date. Whether or not the said declaration will be accepted, the examiner will judge it when proceeding with the substantive examination.

(Source: TIPO Newsletter dated September 8, 2010)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4762)

Introduction X (to be continued) - main points of the amendment to the current Patent Act

   Article 123 (amended)

    The term "design" refers to a any creation reflected by visual appeals with respect to the shape, pattern, color, or their combination, of an article as a whole or in part.

    The term "associated design" as used herein refers to a creation made by the same person, which is originated from and similar to his/her original design.

    For computer generated icons (Icons) and graphic user interface (GUI) applied to an article, an application may also be filed pursuant to this Act for obtaining design patent protection.

Our comments:
(1) The system of “associated design” will be abolished from the amended Patent Act,so the second paragraph of the above Article is deleted.
(2) The computer generated icons (Icons) and graphic user interface (GUI) applied to an article will be deemed kinds of “design” patents in order to meet the demand of our domestic industry and comply with the international trend of the design protection.

   Article 124 (amended)

     A design which is industrially applicable may be granted a patent upon application in accordance with this Act provided that the design is free from any of the following:

(1) Prior to applying for patent, the same design or a similar design has been disclosed in publication(s);

(2) Prior to applying for patent, the same design or a similar design has been publicly practiced; and

(3) Prior to applying for patent, the design has become publicly known.

     A design patent shall not be granted if the said design can be easily accomplished by persons having ordinary knowledge in the concerned technical field based on technology prior to patent filing notwithstanding that none of the events prescribed in the preceding paragraph exists.

     Any of the following events shall not be deemed as one prescribed in Paragraph 1 or the preceding paragraph of this Article, which may preclude the grant of a design patent, provided that the concerned patent application is filed within six (6) months from the date of the event's occurrence:

(1) Where the design has been disclosed via printed publication; 

(2) Where the design has been displayed at an exhibition sponsored or recognized by the government; or

(3) Where the design has been disclosed against the will of the patent applicant.

     An applicant claiming exemption as set forth in Item 1 through Item 2 of the preceding paragraph shall state the fact and the relevant date in the patent application at the time of filing and submit evidentiary documents within the time limit specified by the Patent Authority.

     If the same applicant applies for a patent on a design similar to another design patent application filed by the same person, an associated design patent application shall be filed in respect of said similar design without being subject to the restrictions set out in Paragraph One and in the preceding Paragraph of this Article. However, if, prior to the filing of the original design patent application, another design identical or similar to such associated design has been published, or put to public use, or has become known to the public, no associated design patent may be applied for and granted under this Act.
 
     No application for an associated design patent may be filed if the design involved is claimed to similar to another associated design.

Our comments:
(1) The same amendments are made to the design patent according to the amended Patent Act, Article 22 for the invention patent.
(2) The system of “associated design” will be abolished from the amended Patent Act, so the last paragraph of the above Article is deleted.

   Article 126 (amended)

     Any of the following items shall not be granted a design patent:
(1) a configuration of an article, which is purely functional;
(2) a purely art creation or work of fine art;
(3) the layout of an integrated circuit and electronic circuits;
(4) an article which is contrary to public order or morals.
(5) An article the shape of which is identical or similar to a political party flag, the national flag, a portrait of the Father of the ROC, the national emblem, the military flags, an official seal, or a medal awarded by the government.

Our comments: When satisfying the conditions set in the item (5) of this Article, the design will lose novelty as regulated in the original and amended Patent law. So, it’s not necessary to regulate the deleted conditions in item (5) of this Article again.

   Article 129 (added)

    For two or more similar designs owned by the same person, applications may be filed for design patent and its derivative design patent(s).
 
    The filing date of a derivative design patent application shall not precede the filing date of the original design patent application.

    An application for derivative design patent, which is filed after the publication of the original design patent, is not acceptable.

    An application for derivative design patent shall not be accepted if the design covered in such derivative design patent application is not similar to that covered in the original design, but is similar to the design covered in another derivative design patent.

Our comments:
In the present Patent Act, when there are two or more similar designs owned by the same person, one should be designated as “original design” and others are designated as “associated designs”. In the amended Patent Act, a derivative design patent will have noticeable differences from the associated design. The main differences are listed below:

1. The timing of filing: an associated design can be filed whenever the original design is alive. An application for derivative design patent should be filed before the publication of the original design patent (Amended Patent Act, Article 129). 

2. The patent right: an associated design has no independent patent right but is attached to the patent rights of its original design. An associated design right shall not be claimed separately, nor shall its effect be extended to the scope of similarity. A derivative design patent can be enforced independently, and its effect shall be extended to the scope of similar designs (Amended Patent Act, Article 139).

3. Duration of patent right: The patent right of an associated design shall be revoked or extinguished concurrently with the revocation or extinguishment of the patent right of the original design. The duration of a derivative design patent right shall expire simultaneously when the duration of the original design patent right expires (Amended Patent Act, Article 137). However, the patent right of a derivative design patent will not be revoked concurrently with the revocation of the patent right of the original design.

   Article 130 (amended)

    When two or more design patent applications are filed for the same design or similar design(s), only the first-filed patent application can be granted a design patent.  The above shall not apply if the priority date claimed for the later-filed patent application is earlier than the filing date of the earlier-filed patent application. 

    If the filing date and the priority date referred to in the preceding paragraph are the same, the applicants shall be notified to reach an agreement with respect to the matter concerned. If such an agreement cannot be reached, none of the applicants shall be granted a design patent. If the said design patent applications are filed by the same applicant, the applicant shall be notified to select one design patent application within a time limit; failure to make a selection within the time limit shall result in rejection of all such design patent applications.

    While the applicants concerned are in progress of reaching an agreement, the Patent Authority shall require these applicants to report the results of the negotiation within an appropriate time period. If the said report is not submitted within the specified time limit, it shall be deemed that the agreement is not reached. 

    The above three (3) paragraphs shall not apply to any of the following: 

(1) between the original design patent application and its derivative design  patent application(s); 

(2) between the derivative design patent applications in the case that where there are two or more derivative design patent applications originated from the same original design patent application.

Our comments: 
Since for two or more similar designs owned by the same person, applications may be filed for design patent and its derivative design patent(s), the “first-to-file principle” will not apply to the derivative design patent applications.

   Article 131 (amended)

    When filing a design patent application, each design patent application shall cover only one design.

    Where two or more articles belong to the same category and such articles are in custom sold or used as a set, one design patent application can be filed to cover the designs applying to the said articles.

    When filing a design patent application, the article to which the design is applied shall be stated.

Our comments: 
In the amended Patent law, one design patent application can be filed to cover two or more articles which belong to the same category and are in custom sold or used as a set. However, the patent right of those articles should be alleged as a whole and cannot be divided.

(Source: TIPO News dated December 15, 2009)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4199) 

Ⅰ.

The draft of amendment of official fees for trademark applications in Taiwan

    As announced by the TIPO on November 11, 2010, the official fees for trademark applications will be amended and effective in February 2011. The main points of the draft of the new official fees are as follows:

    The new official fees for trademark applications may be formally promulgated and effective on February 1, 2011 as mentioned in the draft of the amendment of the official fees. Please be assured that we will keep you informed of the development of this matter as soon as there is any new announcement from the TIPO.

(Source: TIPO Newsletter dated November 11, 2010)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4858)

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Year 2011 National Holidays in Taiwan, R.O.C.: